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best mode

October 19, 2012

One of the unusual features of US
patent law is the requirement that a patent application include a description of
what the inventor considers to be the best mode of practicing the invention (35 U.S.C.
§112, first paragraph).
Because the USPTO isn’t usually privy to what transpired during the
development process, best mode rejections by the USPTO are rare. The ability to conduct pre-trial discovery
means that best mode challenges to patent validity during litigation haven’t
been quite as rare, but they’re still hardly run-of-the-mill events. And as a result of the passage of the
so-called America Invents Act, best mode challenges in court have gone by the
wayside, as failure to meet the best mode requirement can no longer serve as a
defense to a charge of patent infringement.

Nevertheless, the best mode
requirement itself remains on the books, and can still serve as a basis for
rejection by the USPTO. With the
addition of third party “pre-issuance submissions” in pending patent
applications now available, as well as post-grant proceedings that allow for
challenges to patents on grounds that aren’t limited to prior art, best mode
violations, when they become known, are a potential weapon in the hand of
competitors. Which means that businesses
whose competitors have pending US patent applications should monitor those
competitors’ public statements, because if the competitor is trying to avoid
disclosing the best mode and isn’t careful about what it says while its patent
application is pending, it may shoot itself in the foot.

Case in point: an article has been
circulating around the net and in print media this week about an Israeli inventor
who has developed a bicycle made entirely of recycled cardboard, which itself
is recyclable, and which reportedly can be produced very inexpensively.

As someone who frequently rides a bike
to work, I find the notion of an inexpensive, recycled/recyclable bicycle
intriguing. But as someone who spends a
significant part of his professional life trying to secure patent protection
for inventors like the one interviewed in the article, two sentences in the
article caught my attention. The first sentence
says,

“Once the shape has been formed and cut,
the cardboard is treated with a secret concoction made of organic
materials to give it its waterproof and fireproof qualities. In the final
stage, it is coated with lacquer paint for appearance.”

The second sentence reads,

“Once ready for production, the bicycle
will include no metal parts, even the brake mechanism and the wheel and pedal
bearings will be made of recycled substances, although [the inventor] said he
could not yet reveal those details due to pending patent issues.”

The highlighted passages point to secret
aspects of the process for producing the bicycle, as well as the fact that,
apparently, there is at least one pending patent application. But the words “secret” and “patent” are as immiscible
as oil and water: disclosure, not secrecy, is the quid quo pro for a
patent.

Which made me wonder just what was
disclosed in any of the inventor’s published patent applications. A look at the pending US
patent application reveals a very short description, and the
following pithy statement about treating the cardboard to make it
waterproof: “[0030] The cardboard preferably is treated with
either organic or inorganic (but preferably organic) sealant for waterproofing.
The cardboard also undergoes flame resistant treatment. Both of these processes
are known in the art.” Hmmm. That
statement might satisfy the best mode requirement, if the “secret concoction” referred
to in the new article isn’t really secret but is something known in the art. But if the “secret concoction”, or its use to
treat cardboard, is something not known to the public, yet was known to the
inventor at the time he filed the patent application, he may have a best mode
violation on his hands.

Or not. The independent claims of the application –
claims 1, 6 and 9 – don’t recite anything about treatment of the material, so
maybe the failure to adequately disclose the best way of treating the cardboard
is irrelevant. On the other hand, several
of the dependent claims recite “wherein
said shreddably recyclable hub arrangement includes at least one material
selected from the group consisting of: i. PET, ii. thermoplastics materials,
and iii. recycled plastic materials” or some variation thereof. And while that language appears in the
specification too, thus presumably fulfilling the written description and
enablement requirements, it’s not clear that with respect to these claims the
best mode requirement has been fulfilled.

As to the bit about details that
couldn’t be revealed to the Reuters reporter, if the patent application didn’t
include those details and the inventor is now publicly showing off his bike, it
appears that there may be a self-created priorart problem here, should he
later want to claim those aspects of the bicycle (unless under the AIA this
counts as the sort of pre-filing disclosure that could be used to save the
inventor’s skin if he files an application on the as-yet-undescribed details
after March 15, 2013). If, on the other
hand, those details were known before he filed the pending application, then he
may have a best mode problem. Perhaps he
has already filed some sort of follow-on application to describe and claim the
as-yet undisclosed details, but of course that will only help if those details
aren’t obvious in view the already-published, still-pending application.

Corporate marketing departments, take
note: the bottom line here is that even if there’s no best mode issue, by
giving this interview the inventor has armed adverse parties with the ability
to challenge his application before the USPTO on best mode grounds, should the
application eventually be allowed.
Sometimes it’s better to keep your mouth closed. Or to engage patent counsel that writes more
than a minimalist specification. Or to pay for patent counsel to write more
than a minimalist specification. Or all
three.

Whether
the application actually describes a patentable invention is a separate
question. The US Examiner seems to think
not, having issued a final rejection in May 2012, but it appears that, like the
person who drafted the application, the examiner may have also attended “Do As
Little As Possible U.”: the main prior art cited is directed to a tricycle, and
the examiner supplements this with a 1946
patent that describes a dummy cannon with fake wheels
made of cardboard mounted on immovable rectangular axles, and a third patent
describing a tubular bicycle frame made of plastic composite material. Personally, I think this
nifty paper cut-out model of the 1966
Batmobile would be better prior art against claim 1, since
it has paper axles and wheels attached thereto via a hub; if it doesn’t qualify
as prior art, I suspect there exist similar paper models that do.